Of Photographers, Writers and Trademarks

This week's column by Ctein

Three years ago, I wrote an introductory column on the subject of trademarks. It's time to hit that subject again, especially in light of a recent kerfuffle between DigitalRev and Woodman Labs.

I strongly recommend readers review my previous column and the comments therein for a more complete take on the nature of trademark than I'm presenting here.

It's important to understand the trademarks and copyrights are very different entities. A trademark doesn't have to be creative or novel or any kind of intellectual invention. It's just something that uniquely identifies your business and allows you to distinguish it from competitors. That's why there are registered trademarks for Apple (Computers) and Music, Windows operating systems, and McDonald's hamburgers. (You don't have to register a trademark, although that affords additional protections.) You can even register your own name as a trademark, within the scope of your business. Some famous artists and photographers have done so.

(No, I have not registered Ctein. Although the name is close to unique, it's just not all that valuable.)

The same word can be used as a trademark by a bunch of different businesses or products, so long as they are not competing in the same arena. Example—Apple (Computers) and Apple Music. Even trademarked logos can be similar, so long as there's no chance of confusion.

There are the inevitable gray areas in anything involving intellectual property. There's no obstacle to me opening up a portrait studio called McDonald's Portraits. If I name it McDonald's Kids Portraits and adopt a clown as my corporate mascot, I'm pushing my luck. I definitely better not paint the studio red and yellow and put a golden arch over the door!

It's not that the Burger Meister (I was going to say King, but, well, you know...) is in the portrait business. But I'm starting to create the misimpression that my business is part of their empire, and that's a no-no. If your actions sow confusion about who's in what business, you're into infringement territory.

A trademark is very specific. You can't trademark a concept, even a physical one. The Rock 'n Roll Hall Of Fame lost their lawsuit against the photographer in good part because they tried to claim that any photograph of their building violated the trademarked images they used. That's a no-go. The Transamerica Corp. has trademarks on certain portrayals of their signature building. My photograph...

Transamerica Pyramid, San Francisco, CA—1976. Photo by Ctein.

...doesn't violate those. (Unless I start using it to advertise a real estate/financial business, and then we're back to sowing confusion. Don't go there.)

Similarly, the owners of Lone Cypress can't prevent you from making and using photographs of that tree anyway you want, so long as they're made from public property and so long as they're not close to specific renditions that they've trademarked (or you're using them in a business entirely separate from theirs and not likely to be confused with it).

A copyright lets me restrict and control reproduction of my words and photographs, except for some very narrow exceptions that are carved out by the Fair Use doctrine. A trademark, broadly speaking, does not. You can refer to trademarks in any way you like, so long as you're not sowing confusion or leveraging off of their business.

Remember the column I wrote some months back lambasting Apple for killing off Rosetta in Mac OSX 10.7 (a.k.a. Lion)? Do you think I needed Apple's permission before using any of those trademarked words? Technically speaking, they can require me to put the appropriate trademark symbol after each and every use (although that seems to be falling out of common practice), but they can't stop me from using them in my writings. If this weren't the case, it would be just about impossible to write any kind of article that referred to any products or companies without letters of permission from each and every one. Every single piece of writing you see, anywhere, that referred to a business or product would be a trademark violation.

They're not. The law simply does not allow for that kind of restriction on referring to a trademark. (But, again distinguishing between copyright and trademark, they can refuse me permission to use product photographs from their website, if they so choose.)

Now that said...
It's always worth remembering that a lot of people out there are bullies, thugs, or jerks. Some businesses out there will try to strong-arm you into doing things their way. They'll threaten you with lawsuits or worse. That's nothing new for writers or photographers. [Amen —Ed.] I've written in the past about how various manufacturers and individuals have gone ballistic over articles they didn't like, and it has nothing to do with the Internet, digital rights, or anything else. Trust me, those folks will always find something to threaten you with.

Understand that if you decide to give into them (and who would blame you), it's because you know they can beat the crap out of you. It's not because they have the law on their side.

©2013 by Ctein, all rights reserved

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(To see all the comments, click on the "Comments" link below.)
Featured Comments from:

Doug: "A nasty trap that many people innocently stumble into: properly used, a trademark can be an adjective. Why does that matter? Consider these two possible names for a web site that isn't run by Nikon:

nikonsupplies.com
suppliesfornikon.com

Most people wouldn't think there is any real difference between those two names. But legally, there is a huge difference. The first name is trademark infringement. It uses 'Nikon' as an adjective for 'supplies,' and thereby implies that the site is run by Nikon. The latter name does not suggest that Nikon runs the site."

Comments

[KeithB]

Wow, a whole column about trademarks and copyrights and no mention of Disney? I'm impressed. Disney is in a tough spot, because they have defend themselves all over the place because they are ubiquitous. Every preschool that puts a picture of a Disney character outside has to be quashed to prevent dilution.

[Bill Pierce]

Bravo!

[Howard Sandler]

Sound clips, e.g. the roaring lion for MGM, can now be trademarked, at least here in Canada. See the list here:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03433.html

[John Camp]

As a writer, "fair use" has always seemed like a very reasonable and necessary doctrine, but for some reason, it doesn't seem to apply to everything. (I would have no problem if somebody quoted from one of my books.) For example, using song lyrics from copyrighted songs in a novel can create serious problems. I'm not talking about using a whole song, but if you have one of your characters singing a snatch of a Beatles song, you can get sued and, as I understand it, lose. If you call up somebody and ask to use a few lines from a song, they'll want money for it, and often quite a lot. I heard an interview with a well-known country singer and song-writer, Ray Wylie Hubbard, and he talked about writing a song in which he wanted to quote directly from another pretty famous song, and the people who control that stuff (ASCAP or somebody) wanted so much money that he decided to forget it. Then he encountered the song writer, Tony Joe White, who is also a well-known performer, and White said something to the effect of Hell, he didn't care, and he arranged to have the quote approved; but even the writer of the song had to jump through his butt to get it done.

Maybe songs are a specific carve-out from the rules, or maybe it's just that the enforcers of the song rules are, as you suggest some people are, bullies. But it's a confusing situation.

[Michael Perini]

So what then is the situation with mentioning products in reviews?
Is it enough to simply use the © ™ or ® after each instance of the name?
Does 'Fair Use' extend to Trademarks & Service marks for the purposes of a review or comment?

[Geoff Wittig]

Exploitation of the legal system by powerful corporations to bully, intimidate or silence potential critics has a long and dishonorable history in America. There's even a name for one variety of this procedure: the "SLAPP", or strategic lawsuit against public participation. It leverages the sad fact that in the U.S. you can generally have as much justice as you can afford. Defending yourself against a corporate goliath is legally doable but will quickly bankrupt anyone who is not very wealthy.

[ctein]

Dear Keith,

Disney wasn't a useful example for the points I wanted to make. But, yeah, I hear they've got a coupla trademarks.

~~~~~~

Dear Howard,

Yes, sounds, looks, maybe even smells for all I know, can be trademarked.

~~~~~~

Dear John,

Music IP has rules all its own. They're not like the ones for any other kind of intellectual property. It's why photographers usually flounder when they attempt to make any kinds of analogies between photographic IP law (especially in the area of fair use) and practices in the world of music.

~~~~~~

Dear Michael Perini,

You did not read my column very carefully, did you?

pax / Ctein

[Richard]

These types of actions by Gopro cause irreparable damage to the abilities of customers to make informed decisions on purchases. You can compare it to the auto industry in America and the TV shows that would do reviews. Basically they never reviewed a bad car. Oh maybe there was an aspect they didn't quite like but "over all we think this will be a good buy". When I started (was able) to watch car shows from England I was quite surprised to see the cars literally ripped to shreds. In one episode the presenter started to rip pieces of plastic of the dash of a Renault to show how crappy the car actually was. As soon as you let the manufacturers control the reviews then we are essentially being cheated out of our money and more importantly products will cease to improve and will be cheapened at every turn. Very similar to the American auto industry that has lagged in quality behind other countries.

[GoPro made a significant mistake, but it wasn't the one everybody thinks it made. It was objecting to improper branding of items in DigitalRev's store, not the use of its trademark in the comparative review. Its mistake was in not making that distinction clear. --Mike]

[ctein]

Dear Geoff,

SLAPP suits were made illegal in California. Yay!

pax / Ctein

[Kostas]

Hi Ctein

as you said, copyright and trademarks are very different things covered by different laws. The DMCA specifically applies to copyright infringements. In the DigitalRev / GoPro story that you linked, I see the notice from GoPro states:
"We are providing you this letter of notification pursuant to the Digital Millennium Copyright Act 17 USC??512(c) to make Softlayer.com aware of material on its network or system that infringes the exclusive copyrights of Woodman Labs
Read.."

Further below it covers the details of the infringement:
"We have a good faith belief that the Internet site found at digitalrev.com infringes the rights of the Company by using the following trademarks of the Company"

What I don't understand is how is the DMCA relevant to this? There is no copyright violation. Was there a trademark infringement at all, and they simply mentioned the DMCA to make it sound more threatening? Or is the takedown notice completely invalid?

[KeithB]

John Camp:
Fair use is not a catch-all that any exerpting is OK, in the wikipedia article it states: "Examples of fair use include commentary, search engines, criticism, news reporting, research, teaching, library archiving and scholarship" note that "novel" is not listed there!

[Rob Reiter]

I have called my printing business "The LightRoom" long before Adobe put out the program "Lightroom." I asked a lawyer about potential issues (I never did anything but register it once as a fictitious name within my county.) He said not to worry. I haven't, and there has been no problem. When Adobe demoed the program for the first time at Macworld, I walked up to someone at their booth and showed them my business card and said they least they could do was give me a free t-shirt. They did. I considered the matter closed. All business disputes should be settled so.

[Farshore]

Well, Ctein, there were a couple incidents of corporate bullying right here in our own neighborhood. One was actually funny: when Sun Microsystems came out with the java programming language their legal department started filing lawsuits against everyone who used the word "java" in association with a business. One of the recipients of a cease-and-desist order was Red's Java Hut, down on the lower Embarcadero in San Francisco. Sun quickly retracted the letter, perhaps due to the extensive derision from programmers ;)
Another, less humorous, incident occurred in Half Moon Bay a number of years ago. A local coffee shop, owned by a man named Macdonald (spelled as written), was sued by McDonald's for using just his own name over the entrance to his little hole-in-the-wall place (sans golden arches, plastic decorations, etc.). This was pre-internet time, so there was no possibility that anyone above moron level intelligence could mistake one business for another. Happily, the place is still around and still a good place to hang out, although the name has now been changed to Mcoffee.
Drop by the area some time. The beaches along this stretch of the San Mateo coast are a great place to shoot. Bring your weather resistant OMD.

[Hugh Crawford]

"Similarly, the owners of Lone Cypress can't prevent you from making and using photographs of that tree anyway you want, so long as they're made from public property"

Of course in that particular instance there is no public land with a view of that tree, which is one of the reasons that it's a bad example. Pre 1880 photographs would be an interesting edge case I suppose.

John Camp et all:

Music and audio copyright exists in a parallel universe , don't even try to compare literary and image copyright law to music copyright.

[James Bullard]

Amusing story that may be just a story. Allegedly the McDonalds corporation threatened action against a Scottish restaurant named McDonalds that turned out to be owned by the Chief of Clan McDonald who responded by asking who gave the corporation the right to use his name.

[Kevin Purcell]

The US Olympic Committee is another stauch (over-)defender of it's trademarks and because of the Ted Stevens Olympic and Amateur Sports Act 1998 they have near monopoly on several adjectives far more than normal Trademark law allows.

Especially a pain up in Washington where the "upper left hand side" of Western Washington is the "Olympic Penisula" and so has a lot of "Olympic Businesses". But if they distribute outside of Western Washington then the USOC will (and does) go after them.

http://seattletrademarklawyer.com/blog/2007/8/13/best-of-the-olympic-peninsula-guide-runs-afoul-of-us-olympic.html

[Bear.]

Doug,
Your 'Nikon supplies' examples, are not examples of trademark infringement issues - they both may involve breaches. Rather, the distinction you make is relevant to the common law tort - lawyer talk for a civil as opposed to a criminal wrong - of passing off. That is, it is a tort to represent your business as if it belongs to someone else.
Bear.

[KeithB]

Rob, I don't know who was first, but there is an Adobe Photo Shoppe in Santa Fe, NM.

[Mart]

Reminds me of the MikeRoweSoft.com story. Microsoft offered $10 for the domain and he made the mistake of responding with "how about $10,000". Although he registered the name just for the "phonetic pun", asking for money implied he was cybersquatting. The rest is history.
https://en.wikipedia.org/wiki/Microsoft_vs._MikeRoweSoft

[Kenneth Wajda]

Here's the case I remember hearing about. A guy named Victor with a Kentucky adult store Victor's Secret eventually lost the case. http://www.nbcnews.com/id/24760241/ Just the way it goes.

[Friv]

Bravo!

[John Haines]

Along Route 9 in Garrison, NY, there is a Papa John's Pizza. For years I never went there because Pappa John's (the national chain) pizza is, well, pretty awful. Recently a friend told me that the one on Route 9 has nothing to do with the chain, that it's family owned and was there years before the chain was established and that they made terrific pizza. I tried it and he's right. The food is great (wonderful cannoli), the prices reasonable, the service excellent and the people very friendly.

I wonder if the chain ever tried to stop them from using the name. I also wonder why they didn't change their own name so people wouldn't think it was just another Pappa John's™® and step on the gas.

[Crabby Umbo]

The Milwaukee Art Museum has tried to use it's "open wing" Calatrava design as part of their identity program to try and skirt the same issues as The Rock and Roll Hall of Fame. If you are caught by their guards on or near the property, taking a picture of it, and you are deemed to "look" professional, they will try and stop you; and threaten a law suit. I'm pretty sure it falls under the same legal areas as the RRHOF, but standing there arguing the fine points of the law with people who basically don't understand anything, and are just "doing what they're told", is a silly way to spend ten minutes; needlessly akin to poking a bear in the wild.

I shot some very nice pics of the Calatrava building with fully spread wings, and the Oscar Maier Weiner Mobile in front of it (everything you need to know about Milwaukee in a nut shell), and the guard tried to stop me, when I said I was an amateur, they told me my Hasselblad camera didn't look to be amateur. I just laughed...

[ctein]

Dear Farshore,

The Sun-Java thing was definitely an example of bullying/overreach/nonsense. The MacDonald coffee house was not. A single-letter difference is still well within the confusion realm, especially the Mac vs Mc thing (as anybody named Mc/MacSomething has experienced). And McDonald has staked out a very large and well-established territory in the restaurant business.

Whether it happens to be someone's name is supremely irrelevant, and it should be that way. There are lots of people in the world named Disney, Apple, Sun, whathaveyou. Unless your trademark name is entirely fabricated, it's a sure thing that someone else, somewhere will have used it (or be named it) before you. All that counts is who gets in first with the registration. That reserves the right for you to uniquely identify your business. Everyone else? They need to find another way to do it. That's proper and fair.

As I spelled out in my previous column on the subject, a trademark must be defended aggressively or you lose it (like copyright used to be). The legal (and sensible) presumption is that if your trademark falls into common use, or if you don't make the effort to defend it, well, then it can't really be all that exclusive and valuable to you, can it?

pax / Ctein

[Acekard 2i]

Yeah !… life is like riding a bicycle. You will not fall unless you stop pedaling!!…

[David Dyer-Bennet]

Poetry has some of the same issues as song lyrics in copyright, as various friends have found out. The T.S. Eliot estate is particularly active.

With the result that references to these famous poems are disappearing from the literature. Some of them will remain famous just on their own perhaps, but if nobody ever refers to them, how will anybody know?